The PTO is already starting the hiring process for administrative patent law judges for its new Denver, Dallas-Ft. Worth, and San Jose offices. You can see the job listings here: [Denver], [Dallas - Fort Worth], and [San Jose].

The deadline for these particular listings is apparently Sunday, August 26, 2012.

The Federal Circuit heard oral argument yesterday in the appeal of the order granting a preliminary injunction in Apple v. Samsung. The court previously granted expedited oral argument for this appeal. You can listen to yesterday’s oral argument here: [Listen].

Much of the oral argument was spent arguing about how to define the size of the market for the smart phones at issue.

What intrigued me, though, is that this is another “each” case.

The claim being discussed in the oral argument reads as follows:

An apparatus for locating information in a network, comprising:
an interface module configured to receive an inputted information descriptorfrom a user-input device;

a plurality of heuristic modules configured to search for information that corresponds to the received information descriptor, wherein:

each heuristic module corresponds to a respective area of search and employs a different, predetermined heuristic algorithm corresponding to said respective area, and the search areas include storage media accessible by the apparatus; and

a display module configured to display one or more candidate items of information located by the plurality of heuristic modules on a display device.

Each

You can listen to Apple’s attorney argue about the meaning of “each” in this sound bite [Listen]. The link to the order granting the preliminary injunction at the beginning of this post gives more of a discussion on the claim construction of “each” for the above claim. See page 19 of the order.

Mud-slinging

Judge Moore also had some tips for brief writers at the end of the oral argument. She noted that mud-slinging in the briefs turns off appellate judges. [Listen].

Plurality

The claim above also uses the word “plurality.” Use of the word “plurality” is ubiquitous in patent claim drafting. In his post last week about the Federal Circuit’s Magsil Corp. v. Hitachi, __ F.3d __ (Fed. Cir. 2012) decision, Dennis Crouch observed that the word “plurality” could be deemed an open-ended range term with no upper bound. In Magsil, the court invalidated a claim for not fully enabling an open-ended range claim that recited “at least 10%.”

“Siri, will the Federal Circuit officially recognize that “plurality” is a legal term of art — just as it did with the word “comprising” in Genentech v. Chiron, 112 F.3d 495 (Fed. Cir. 1997) — and that it has an implicitly finite upper bound?”

I thought this was kind of a fun coincidence with the Myriad case. The book “Mary’s Magic Microscope” was published in May of 2011. The book is described as follows:

Mary’s Magic Microscope is the first in a series of books for children of middle-school age. It follows the journey of Mary McDoogle, a 12-year-old girl who finds a magic microscope in her grandpa’s attic that allows her to be transported into the micro world. Here, Mary discovers many new and wonderful adventures. She uses her microscope to fight crime, and help her dad, an FBI chief, capture the Sand Bandit, who stole the precious Star of Africa diamond. Imagine Nancy Drew meeting Alice in Wonderland on a Fantastic Journey. This book provides a unique insight into an amazing new scientific world.

You can order the book at this [Link]. Actor Stacy Keach is one of the co-authors.

The AMP et al. v. USPTO et al. case decided this past week (aka Myriad II) puts a new twist on the dreaded words “We’re from the government and we’re here to help you.” In Myriad II it was the USPTO that was afflicted by the words “We’re from the GovernmentSolicitor General’s Office and We’re Here to Help You.”

The Myriad case is unique in that the US Solicitor General’s Office pulled rank on the USPTO Solicitor’s Office for purposes of briefing and oral argument. In the first oral argument of Myriad at the Federal Circuit (Myriad I), the SG’s Office brought unintended comic relief to the proceedings by proposing a “magic microscope” test.

One of the first questions asked at the oral argument of Myriad II in July was whether the SG’s Office was still advocating such a test. Unwilling to distance itself entirely from its “magic microscope,” the SG’s Office stated that it still found the “magic microscope” to be a useful metaphor.

One thing that interested me about the oral argument of Myriad II was Judge Bryson’s comment that in the past the US Attorney General’s Office has allowed an administrative agency to file, as an appendix to the SG’s brief, a brief that dissents from the SG’s position. Judge Bryson cited the TVA v. Hill, 437 U.S. 153 (1978) case as one example. [Listen]. (Judge Bryson worked for the US Solicitor General’s Office before being appointed to the court and argued many cases at the Supreme Court.)

At any rate, I took Judge Bryson’s comment as a suggestion that the US Solicitor General’s Office should allow the PTO to file its own dissenting brief in any subsequent appeals of Myriad II. Whether the SG’s Office has enough confidence in the merits of its own position that it allows the PTO to file such a dissenting brief remains to be seen.

Patent prosecutors will get a kick out of the relatively new phenomenon of the PTO arguing in favor of patentability. This occurs whenever the Board of Appeals has ruled against a party that brought an inter partes reexamination. At that point, the Solicitor’s Office for the PTO is placed in the position of defending the Board’s decision when an appeal is made to the Federal Circuit.

These appeals are now making their way to the Federal Circuit with increasing frequency. There were at least two such appeals argued at the Federal Circuit last week.

So far, the Solicitor’s Office seems to be arguing with the same level of zeal in defending these already issued patents as it does in arguing against the patentability of some applications. Although, one has yet to see whom I view as the PTO’s designated hitters, Tom Krause and Ray Chen, make an appearance at the podium to argue in favor of patentability.

In the Plasmart appeal, Judge Moore noted the role-reversal for the PTO and asked the Associate Solicitor for the PTO if it felt good to argue in favor of patentability. He said it did . . . . [Listen].

The USPTO will be conducting additional roadshows this fall concerning the implementation of the America Invents Act. Roadshows will be held by the USPTO in Denver, Los Angeles, Houston, Minneapolis, Detroit, Atlanta, New York, and Alexandria.

It would have been interesting to be a fly on the wall during the panel conference that followed the oral argument of Momenta Pharmaceuticals et al. v. Amphastar et al., App. No. 2012-1062 (Fed. Cir. Aug. 3, 2012). In that decision, Judges Moore and Dyk formed the majority while Chief Judge Rader formed the dissent. In Chief Judge Rader’s dissent, he notes his disagreement with the majority and remarks that he was present during the drafting of the statutory provision in question. See C.J. Rader’s dissent in Momenta at page 10 (”The authors of this section (and I hesitate to add that I was present through this legislative process) did not imagine that § 271(e)(1) would allow continuous, commercial infringing sales during any portion of the life of the patent.“) This would echo a remark Chief Judge Rader made during the oral argument: [Listen]. Before appointment to the federal bench, Chief Judge Rader served as Minority and Majority Chief Counsel to Subcommittees of the U.S. Senate Committee on the Judiciary.

One issue that seems lost in the quagmire of patent eligibility decisions is a recognition that the U.S. has evolved from the out-dated practice of central claiming (where inventions were determined from the specification) to the more exacting practice of peripheral claiming (where inventions are defined by the claims). Indeed, the US Patent Office prohibits one type of central claiming referred to as omnibus claiming under MPEP section 2173.05(r) due to the fact that omnibus claims fail to point out what is included or excluded by the claim language and thus are not sufficiently definite under 35 U.S.C. sec. 112.

Section 2173.05(r) of the MPEP cites the Board decision of Ex Parte Fressola for an historical discussion of the evolution of U.S. claiming practices over the years:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Claims in utility applications [FN1] that define the invention entirely by reference to the specification and/or drawings, so-called “omnibus” or “formal” claims, while perhaps once accepted in American patent practice, are properly rejected under § 112 ¶ 2 as failing to particularly point out and distinctly claim the invention. See MPEP § 706.03(h) (5th ed., rev. 14, Nov. 1992); Landis, Mechanics of Patent Claim Drafting, § 2 (1974).

*2The written description and the claims are separate statutory requirements. Modern claim practice requires that the claims stand alone to define the invention. Incorporation into the claims by express reference to the specification and/or drawings is not permitted except in very limited circumstances. As stated in McCrady, Patent Office Practice, § 90 (3d ed. 1950):

Sec. 90. Reliance upon Disclosure

The general rule is that the claims should be self-contained; that is, they should not expressly rely upon the description or drawing to give them meaning…. The terms “substantially as described” and the like, once much used in claims (GLASCOCK 1943 § 5640) are now rarely seen. The Office disregards them in interpreting claims….

Claims consisting only in a reference to the disclosure, as “The features of novelty herein disclosed,” are not allowed except in design cases.

….

A claim specifying “the velocity cycle shown in Figure 1″ was allowed without discussion of the backfiring expression, and claims have been allowed upon limitations consisting merely in references to a table in the specification and a diagram in the drawing. [Footnotes omitted.]

Incorporation by reference to a specific figure or table of properties, as mentioned in the last paragraph above, is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. See Landis, § 51; Ex parte Squires, 133 USPQ 598 (Bd.App.1961) (discussed in Applebaum, The One Line Picture Claim, 44 J.Pat.Off.Soc’y 379 (1962)); In re Faust, 86 USPQ 114 (Comm’r Pat.1943); In re Tanczyn, 202 F.2d 785, 97 USPQ 150 (CCPA 1953) (reference to curve in claim not questioned); Ex parte Lewin, 154 USPQ 487 (Bd.App.1966); Ex parte Gring, 158 USPQ 109 (Bd.App.1967) (reference to photomicrograph). Incorporation by reference is a necessity doctrine, not for applicant’s convenience.

Early claim forms were significantly different in style and content from modern claims. See Pennwalt Corporation v. Durand-Wayland, Inc., 833 F.2d 931, 957-59, 4 USPQ2d 1737, 1758-1760 (Fed.Cir.1987), cert. denied, 485 U.S. 961 (1988) (NEWMAN, J., commentary) (evolution of claim form); Deller, §§ 1-11. The original method of claiming in this country was based on the central definition where the claims named the broad features of the invention (often just an enumeration of the elements and the reference characters of the drawings) together with a phrase such as “substantially as set forth.” These claims were construed to “incorporate by reference the description in the specification and equivalents thereof.” Pennwalt, 833 F.2d at 959, 4 USPQ2d at 1759. During this early period, “[t]he drawings and description were the main thing, the claims merely an adjunct thereto.” Deller, § 4.

*3Beginning with the Patent Act of 1870, the claims took on more importance. As described in Deller, § 7:

They became much more self-sufficient in that they gave the cooperative relationship of the elements enumerated, instead of a mere catalog of elements followed by some such phrase as “constructed and adapted to operate substantially as set forth.”

The method of claiming shifted from the central definition to the peripheral definition. As described in Deller, § 5:

Central definition involves the drafting of a narrow claim setting forth a typical embodiment coupled with broad interpretation by the courts to include all equivalent constructions. Peripheral definition involves marking out the periphery or boundary of the area covered by the claim and holding as infringements only such constructions as lie within that area.

The conversion from the central definition to the peripheral definition was due to the more rigorous requirements for the claim to stand alone to define the invention and the refusal of the courts to expand the scope of the claims beyond their literal terms. Modern claim interpretation is based on the peripheral system where the scope of the claim is not expanded. See Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 684, 14 USPQ2d 1942, 1948 (Fed.Cir.), cert. denied, 111 S.Ct. 537 (1990) (doctrine of equivalents does not expand claims, it only expands right to exclude to “equivalents”). Modern claim interpretation requires that the claims particularly point out and distinctly claim the invention without reading in limitations from the specification. Pennwalt, 833 F.2d at 959, 4 USPQ2d at 1759-60.

1. The Patent Act of 1793 did not provide for patent examination or patent “claims”.

Judicial determinations of equivalency were made before as well as after the development of systems of patent examination and patent claims. The decisions must be understood in the context of the practices of the time.

The patent grant before 1793 was not automatic, but was subject to review by a committee consisting of the Secretary of State, the Secretary of War, and the Attorney General. Act of April 10, 1790, ch. 7, § 1, 1 Stat. 109, 109-10 (1790). History records that the increasing burdens of this review led to change in 1793, whereby the patent was routinely granted, subject only to formalities and the payment of a fee.

deliver a written description of his invention, and of the manner of using, or process of compounding the same, in such full, clear, and exact terms, as to distinguish the same from all other things before known….In infringement actions the accused device was compared with the description in the patent document. Defenses such as lack of novelty, or prior use, were considered by the courts. A finding of infringement did not require precise correspondence between the description and the accused device. The trial courts determined, 958*958 often by jury, whether there was “substantial similarity” between the accused device and that described in the patent. For example, in Odiorne v. Winkley, 18 F. Cas. 581, 582 (C.C.D.Mass.1814) (No. 10,432), the court, Story, J., charged the jury:

The first question for consideration is, whether the machines used by the defendant are substantially, in their principles and mode of operation, like the plaintiff’s machines. If so, it was an infringement of the plaintiff’s patent to use them…. Mere colorable alterations of a machine are not sufficient to protect the defendant.See also Lowell v. Lewis, 15 F. Cas. 1018, 1021 (C.C.D.Mass.1817) (No. 8,568)(”whether the defendant has violated the patent-right of the plaintiff … depends upon the fact, whether the pumps of Mr. Perkins and of Mr. Baker are substantially the same invention”).

Our research showed no issue of equivalency, i.e. “substantial” similarity, in the cases that reached the Supreme Court during this early period, although several other significant aspects of patent law were treated by the Court. See, e.g., Evans v. Eaton,16 U.S. (3 Wheat.) 454, 4 L.Ed. 433 (1818), the first patent infringement decision of the Supreme Court.

2. The Patent Act of 1836 provided for patent examination and for a statement of the inventor’s “claim”.

shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.It is not clear from the legislative history whether the purpose of the requirement for particularity was to facilitate examination or enforcement, but the style and content of the ensuing “claims” were significantly different from those of later practice. The applicant simply named the broad features that embodied the invention, accompanied by such words as “substantially as set forth”. The claims

served merely to call attention to what the inventor considered the salient features of his invention. The drawings and description were the main thing, the claims a mere adjunct thereto.R. Ellis, Patent Claims, § 3 (1949) [hereinafter "Ellis"]. Ellis cites a typical claim, published by the Patent Office in 1869:

[1.] The combination of the cutters EE, and the feeding rollers II and JJ, substantially as and for the purpose hereinbefore set forth.Id., § 6. This is the style of claim that was before the Court in most of the early decisions that are cited in asserted support of the majority position. The Court explained in The Corn Planter Patent, 90 U.S. (23 Wall.) 181, 218, 23 L.Ed. 1 (1874), that a clause such as “substantially as set forth”

throws us back to the specification for a qualification of the claim, and the several elements of which the combination is composed.To this extent early claim form was a precursor of the “means-plus-function” form of today, in that they both incorporate by reference the description in the specification and equivalents thereof.

[An infringement] is a copy of the thing described in the specification of the patentee, either without variation, or with such variations as are consistent with its being in substance the same thing.As will be discussed, the doctrine of equivalents flowered during this period, although patent claims played a quite limited role in patent enforcement, serving more to identify the essential features of an invention than to set limits to the scope thereof.

3. The Patent Act of 1870 started the move to increased specificity in claiming.

Section 26 of the Patent Act of 1870, ch. 230, 16 Stat. 198, 201 (1870), for the first time required that the applicant

particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. [emphasis added]Judicial decisions during this period show that the transition toward greater specificity was gradual indeed, but by the early 1900s claims “became much more self-sufficient in that they gave the cooperative relationship of the elements enumerated, instead of a mere catalog of elements”. Ellis, § 6.

There evolved during this period a complex jurisprudence on equivalents, wherein the doctrine was applied to the circumstances of each case, as justice required. As in earlier periods, a patent’s claims were less significant in infringement litigation than was the description of the invention, and it was from the specification and drawings that the invention’s substance was determined. However, patent claims became of increased importance as they began to reflect adjustments made during the examination process and, at first occasionally and then more frequently, claims were referred to by the courts in determinations both of literal infringement and of infringement by application of the doctrine of equivalents.

[N]otwithstanding the [last] paragraph of section 112, it is the language itself of the claims which must particularly point out and distinctly claim the subject matter which the applicant regards as his invention, without limitations imported from the specification, whether such language is couched in terms of means plus function or consists of a detailed recitation of the inventive matter. [emphasis added]This practice is in sharp contrast with that of the 19th and early 20th centuries. There was a gradual, erratic, but inexorable transition to the requirement that the claims contain sufficient detail so that they can stand alone, without reliance on the specification to show distinctions from the prior art. Ellis, § 4, describes this as claiming the perimeter of an invention, rather than its core. Deller calls it “stak[ing] out the metes and bounds of the boundaries”, attributing enhanced rigor in claim drafting to the Supreme Court’s decision in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966). 1 A. Deller, Patent Claims, v-vi (2d ed. 1971). Typical of this form is the Pennwalt claim shown ante, with its multiple clauses delineating the entire sorter and its operation. Despite the changes in form and content of patent claims over this long period, the principles of the doctrine of equivalents remained constant.

See also “The Evolution of English Patent Claims as Property Definers” by David J. Brennan for a discussion of the evolution of claiming in England [Link].